How does inventorship affect prior art determination under 35 U.S.C. 102(e)?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Inventorship plays a crucial role in determining prior art under 35 U.S.C. 102(e). The MPEP 2136.04 states:

“If there is any difference in inventive entity, the patent may be applied in a rejection under pre-AIA 35 U.S.C. 102(e).”

This means that even a slight difference in inventorship between the application and the potential prior art patent can make the patent eligible as prior art. It’s important to carefully compare the inventive entities to determine if the “by another” requirement is met.